There will be a case management hearing on June 20 in Oracle v. Google, and the parties have filed what they think are the remaining issues. They are working on getting a stipulation written up on statutory damages. They agree that all outstanding trial issues have been settled by the jury or the judge, and it would be appropriate for a final judgment to issue.

Dr. Kearl has been paid in full. Dr. Iain Cockburn's third damages report was contingent on Oracle paying for it, so it wasn't supposed to cost Google anything, but there is one item left in dispute as to who should pay. And Google intends to ask for its costs to be paid by Oracle, and Oracle would like that not to happen, so they'll argue that point at the hearing.

What does it mean? It means there will be no second trial. Oracle's only hope now is in an appeal.

If anyone is free to attend the hearing, that'd be wonderful. It would be the very first day that our hearts won't be fluttering. Is that not a great feeling? I expect Google is feeling pretty great too. The only items now are whether statutory damages are wiped out by what they get from Oracle to cover the third damages report. I assume that has to be a couple of hundred thousand. So the hearing will be interesting, just to find out the final numbers.

Costs are not everything you spent at trial, by the way. It doesn't include attorney's fees, for example. And I expect Oracle has noticed that the U.S. Supreme Court has agreed to hear a 10th Circuit case, a Colorado case, on whether a losing plaintiff has to pay costs if he brought the suit in good faith, Marx v. General Corp.. Federal Rule of Civil Procedure 54(d) says that “[u]nless a federal statute, these rules, or a court order provides otherwise, costs -- other than attorney’s fees -- should be allowed to the prevailing party.” The Marx case is a Fair Debt Collection Practices Act case, which isn't the situation with Oracle, but Boies Schiller and Morrison & Foerster may have some other statute or rule in mind that they will argue exempts them, or they may argue that they did prevail on some things.

I'd personally like to see Oracle sanctioned for bringing one of the copyright claims, for trying to extend copyright protection to interfaces, accusing Google of infringing the "structure, sequence, and organization of the accused 37 Java API packages", but that won't happen, I don't think. Their penalty is they lost. And David Boies was publicly given a verbal spanking by this judge. How much more perfect do I expect life to be? Whatever the final details, in other words, I'm satisfied.

Both parties submit a proposed final judgment, and I'll do those as text in a bit. Meanwhile, here's
the joint statement, as text:

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION

Pursuant to the Court’s May 31, 2012 Order (ECF 1204), Oracle America, Inc. and Google Inc. jointly submit this statement of issues to be covered at the case management conference on June 20, 2012.

1. Statutory Damages for Copyright Infringement

The Court has asked “whether the amount of statutory damages for copyright infringement should be decided now or at a later date.” (ECF 1204.) The parties are meeting and conferring regarding statutory damages and hope to present a stipulation resolving the issue at the conference.

2. Issuance of Final Judgment

As all outstanding claims and counterclaims have now been resolved by the jury’s verdicts and the Court’s subsequent orders, the parties request that the Court enter final judgment in this matter. Attached hereto are two alternative forms of a proposed Final Judgment (with a placeholder for a statutory damages amount), reserving all rights to appeal any part of the judgment and subject to all prior agreements among the parties.

3. Fees related to Dr. Iain Cockburn’s third damages report

In a January 20, 2012 order, the Court directed Oracle to reimburse Google for “[a]ll attorney’s fees, expert fees, and other expenses reasonably incurred by Google as a result of allowing a third damages study by Oracle.” Jan. 20, 2012 Order [Dkt. 702] at 3, para. 8. After Dr. Cockburn served his third report, Google filed a further Daubert motion, which the Court heard on March 7, 2012. Following that hearing, the Court entered a March 13, 2012 order, [Dkt. 785], granting Google’s motion in part and directing the parties to submit further briefs regarding “how Dr. Cockburn’s report could calculate a reasonable royalty for each individual patent in light of the items stricken by this order.” Id. at 19. The parties then drafted and submitted those further briefs on March 19, 2012. The sole issue in dispute between the parties is whether the fees and costs Google incurred in preparing and drafting its March 19, 2012 brief are recoverable under the January 20, 2012 order as fees and costs “reasonably incurred by Google as a result of allowing a third damages study by Oracle.”

1

4. Fees related to Dr. Kearl’s damages report

The parties agree that, to the best of their knowledge, Dr. Kearl has been paid in full for his work to date on this matter aside from his most recent June 8, 2012 bill which is currently being processed for payment.

5. Taxable costs
Google states that, as the prevailing party, it intends to seek its costs in this matter. Oracle will be prepared to address this issue at the conference.

Update: I decided to do the two proposed Final Judgments from Oracle and Google as a table, so we'd have them side by side for comparison. My reasoning is because I want you to take a look at something that doesn't look right in what Oracle submitted.

Oracle's version is quite a lot longer, because Google leaves out some details. Oracle describes the entire trial and what happened, but I don't think this statement is accurate:

WHEREAS Oracle voluntarily withdrew its claims for infringement of U.S. Patents 6,125,447; 6,192,476; 5,966,702; 7,426,720; and 6,910,205; under the terms set forth by the Court in its orders of May 3, 2011 and March 2, 2012, specifying that “Oracle may not renew those infringement claims in a subsequent action except as to new products”;

Those two orders did say that, but there is another order, dated
March 1, 2012, that spoke about patents being irrevocably dismissed with prejudice, and the circumstances were quite different. Nor would I describe any of the patents being dropped as a "voluntary" action. If I were Google, I'd be worried that this language is foreshadowing more litigation, if Oracle can prevail in the end on the reexaminations of the patents at issue.

Let me show you what I mean.

Let's review what really happened. To begin with, Oracle, in its amended complaint, listed seven allegedly infringed patents -- '447; '476; '702; '720; '104; '205; and '520 -- but the judge forced them to narrow their claims down, which they did. They had started with 132 claims from those seven patents. The May 3, 2011 order said to drop some of them, and it indeed said that the ones they dropped could not be used in the future against Google, unless there were new Google products that allegedly infringed:

Currently, there are 132 claims from seven patents asserted in this action, and there are hundreds of prior art references in play for invalidity defenses. This is too much. The following schedule will ensure that only a triable number of these items — three claims and eight prior art references — are placed before the jury in October, all others to be forsaken. Oracle will surrender all of its present infringement claims against Google based on the 129 asserted claims that will not be tried. Oracle may not renew those infringement claims in a subsequent action except as to new products.

Oracle later dropped another claim of one of the patents, the '476 patent. That, for sure, is also subject to the terms of the May order.

Later, though, another issue involving the patents arose. The patents were working their way through the reexamination process at the USPTO, but they were not finished being reviewed by the time the trial was looming. So in this March 1, 2012 order [PDF], the judge asks Oracle to decide whether it would be willing to *irrevocably* drop, *with prejudice*, the patents the USPTO was reexamining if they were still not resolved finally on the day the trial began in exchange for the early trial date that Oracle said it wanted and Google opposed:

SUPPLEMENTAL ORDER
REGARDING STATEMENT ON
REEXAMINATIONS

Oracle should state a clear answer to the following question: given that the examiners have issued final rejections on patents ’720, ’702, ’476, and ’205, and Oracle has only withdrawn the ’476 patent, but still wishes to go to trial on patents ’720, ’702, ’205, ’520, and ’104, and Oracle still wishes to have an instruction that those patents must be presumed valid and can only be found invalid by clear and convincing evidence, would it be better to postpone trial until after final decisions by the PTO on administrative appeal? Also please answer: to avoid this problem, will Oracle irrevocably withdraw with prejudice patents ’720, ’702, and ’205? The views of Google on these questions will also be appreciated. Please provide responses by NOON ON MARCH 9, 2012, as part of the submission regarding the reexaminations.

IT IS SO ORDERED.

Dated: March 1, 2012.

/s/ William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

Oracle agreed to do so, and I see no language here about any new Google products, just that Oracle would irrevocably drop them:

Accordingly, if the case goes to trial this spring, Oracle will withdraw from the litigation with prejudice each claim of the '720, '205, and '702 patents asserted against Google that remains rejected at the time of trial, and proceed with the copyright case, the '520 patent, the '104 patent, and any asserted claims of the other three patents that are confirmed by the PTO. It would be unjust to delay the trial of Oracle's '520 patent, '104 patent, and copyright claims any further. Oracle's copyright claims are independent of the patent reexamination proceedings and ready for trial. The '520 patent claims have been confirmed and are ready for trial, and, as discussed below, it would be unreasonable to defer trial until there is some further action in the '104 patent reexamination....

Nevertheless, to achieve Oracle's goal of bringing this case suggested timeframe (mid-April to mid-June, 2012), Oracle will agree to withdraw with prejudice any of the '720, '205, and '702 patent claims asserted against Google in this litigation that remain rejected at that time. This approach will streamline the trial and reduce the burden on the jury.

Eventually, Oracle brought to trial just two patents, '104 and '520, with 8 claims between them. Then later, after the trial had begun, Oracle tried to reintroduce one of the patents, the '702, when on appeal the USPTO upheld it, but the judge said Oracle had to stick to the bargain they made to irrevocably drop it, once the trial began:

ORDER REGARDING
THE ’702 PATENT

Before the trial date was set, a substantial question was pending whether to wait until the PTO had finished all re-exam proceedings before commencing trial. To remove this consideration from the calculus, Oracle offered to dismiss with prejudice all patents that had been rejected in a final office action subject to reinstatement in the event the PTO reversed itself prior to the start of trial. In express reliance on this (Dkt. No. 786), the Court set the early trial date requested by Oracle. That trial date (April 16) started on time and at that moment the dismissals with prejudice became final.

A few days later, the PTO did reverse itself as to the ’702 patent but the reversal came a few days too late, for the trial had already started and the dismissals with prejudice had already become effective.

Oracle’s argument that the patent “trial” has not yet started is wrong. There was and is one trial with three phases. The trial started on April 16. This is not only the plain meaning of the term but any other interpretation would inject great prejudice given that the parties have relied
on the issues to be tried and that reliance should not be turned on its head in mid-trial. Oracle will be required to stand by its word and live with the dismissal with prejudice.

IT IS SO ORDERED.

Dated: April 25, 2012.

/s/William Alsup
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

I gather Oracle is now defining "irrevocably" to mean that they can sue Google over the same patents when Google introduces some new products. Is that what the judge meant? I'm not positive. Hopefully, there will be some clarification at the hearing.

Oracle got a fast trial, at its own insistence, and I don't see a bright line from the May order to the March 1st one. Here's the language from the order [PDF] setting the trial date, relying on Oracle's agreeing to drop the patents:

In reliance on Oracle’s withdrawal with prejudice of the ’720, ’205, and ’702 patents, given the final rejections by the PTO examiner, and having twice admonished counsel to reserve mid-April to mid-June 2012 for the trial of this case, this order now sets April 16 as the first day of trial, which will be devoted to jury selection and opening statements.

That bargain was to irrevocably dismiss with prejudice. I see no language talking about any new products being susceptible.
Also, in the January 2012 final pretrial order [PDF], the judge inserted this language:

2. All claims for relief arising out of any patent alleged in the complaint or any amended complaint shall be deemed merged into the claims already selected by plaintiff to be tried.

Perhaps you'll notice other things I've missed.
Here are the two proposed Final Judgments, then:

EXHIBIT A ORACLE’S PROPOSED FINAL JUDGMENT

EXHIBIT B GOOGLE’S PROPOSED FINAL JUDGMENT

WHEREAS a jury trial was held in this matter from April 16 to May 23, 2012;
WHEREAS a partial jury verdict was rendered on May 7, 2012, on Oracle’s copyright infringement claim, finding that (1) Google infringed the structure, sequence, and organization of the accused 37 Java API packages, but failing to reach a verdict on whether the use constituted “fair use”; (2) Google did not infringe as to the documentation for the accused 37 Java API packages; (3) Google did infringe as to the rangeCheck code in TimSort.java and ComparableTimSort.java; (4) Google did not infringe as to the eight decompiled files (seven “Impl.java” files and one “ACL” file); and (5) Google did not infringe as to the English-language comments in CodeSourceTest.java and CollectionCertStoreParametersTest.java;

WHEREAS, on May 11, 2012, the Court granted Oracle’s motion for judgment of copyright infringement as to the eight decompiled files;

WHEREAS a jury verdict was rendered on May 23, 2012, on Oracle’s patent infringement claims, finding that Google did not infringe U.S. Patents RE38,104 and 6,061,520;

WHEREAS, on May 31, 2012, the Court dismissed Oracle’s claim for copyright infringement as to the structure, sequence, and organization of the accused 37 Java API packages;

WHEREAS, on May 31, 2012, the Court, sitting as the
trier-of-fact, rejected on the merits
Google’s affirmative defenses of implied license and waiver, for both copyright and patent infringement, and denied Google’s equitable estoppel and laches defenses as moot;

WHEREAS Google voluntarily withdrew its invalidity defenses to the ’104 and ’520 patents; and

WHEREAS Oracle voluntarily withdrew its claims for infringement of U.S. Patents 6,125,447; 6,192,476; 5,966,702; 7,426,720; and 6,910,205; under the terms set forth by the Court in its orders of May 3, 2011 and March 2, 2012, specifying that “Oracle may not renew those infringement claims in a subsequent action except as to new products”;

-

Therefore, good cause appearing, it is ORDERED, ADJUDGED, AND DECREED that:

1. Oracle’s Claim for Infringement of the ’447 Patent (Count I) is voluntarily dismissed with prejudice.1

______1 All patent infringement claims that are voluntarily dismissed under this Judgment are dismissed with prejudice except as to new products that Google may introduce after the date of this Judgment, pursuant to the terms of the Court’s May 3, 2011 and March 2, 2012 orders.

1. Oracle’s Claim for Infringement of U.S. Patent No. 6,125,447 (Count I) is dismissed with prejudice.

2. Oracle’s Claim for Infringement of the ’476 Patent (Count II) is voluntarily dismissed with prejudice.

2. Oracle’s Claim for Infringement of U.S. Patent No. 6,192,476 (Count II) is dismissed with prejudice.

3. Oracle’s Claim for Infringement of the ’702 Patent (Count III) is voluntarily dismissed with prejudice.

3. Oracle’s Claim for Infringement of U.S. Patent No. 5,966,702 (Count III) is dismissed with prejudice.

4. Oracle’s Claim for Infringement of the ’720 Patent (Count IV) is voluntarily dismissed with prejudice.

4. Oracle’s Claim for Infringement of U.S. Patent No. 7,426,720 (Count IV) is dismissed with prejudice.

5. On Oracle’s Claim for Infringement of the ’104 Patent (Count V), judgment is entered in favor of Google, pursuant to the jury’s May 23, 2012 verdict of non-infringement.

5. On Oracle’s Claim for Infringement of U.S. Patent No. RE38,104 (Count V), judgment is entered for Google.

6. Oracle’s Claim for Infringement of the ’205 Patent (Count VI) is voluntarily dismissed with prejudice.

6. Oracle’s Claim for Infringement of U.S. Patent No. 6,910,205 (Count VI) is dismissed with prejudice.

7. On Oracle’s Claim for Infringement of the ’520 Patent (Count VII), judgment is entered in favor of Google, pursuant to the jury’s May 23, 2012 verdict of non-infringement.

7. On Oracle’s Claim for Infringement of U.S. Patent No. 6,061,520 (Count VII), judgment is entered for Google.

8. On Oracle’s Claim for Copyright Infringement (Count VIII) as to the documentation for the accused 37 Java API packages, judgment is entered in favor of Google, pursuant to the jury’s May 7, 2012 verdict of non-infringement.

9. On Oracle’s Claim for Copyright Infringement (Count VIII) as to the rangeCheck code in TimSort.java and ComparableTimSort.java, judgment is entered in favor of Oracle, pursuant to the jury’s May 7, 2012 verdict of infringement. Statutory damages for Google’s infringement as to the rangeCheck code are set in the amount of $____.

10. On Oracle’s Claim for Copyright Infringement (Count VIII) as to the English-language comments in CodeSourceTest.java and CollectionCertStoreParametersTest.java, judgment is entered in favor of Google, pursuant to the jury’s May 7, 2012 verdict of non-infringement.

11. On Oracle’s Claim for Copyright Infringement (Count VIII) as to the eight decompiled files (seven “Impl.java” files and one “ACL” file), judgment is entered in favor of Oracle, pursuant to the Court’s order of May 11, 2012. Statutory damages for Google’s infringement as to the eight decompiled files are set in the amount of $____.

12. Oracle’s Claim for Copyright Infringement (Count VIII) as to the structure, sequence, and organization of the accused 37 Java API packages is dismissed with prejudice, pursuant to the Court’s order of May 31, 2012.

A. On the portion of Oracle’s Claim for Copyright Infringement relating to the documentation for the accused 37 Java API packages, judgment is entered for Google.

B. On the portion of Oracle’s Claim for Copyright Infringement relating to the rangeCheck code in TimSort.java and ComparableTimSort.java, judgment is entered for Oracle.

C. On the portion of Oracle’s Claim for Copyright Infringement relating to the English-language comments in CodeSourceTest.java and CollectionCertStoreParametersTest.java, judgment is entered for Google.

D. On the portion of Oracle’s Claim for Copyright Infringement relating to the eight decompiled files,G1 judgment is entered for Oracle.

13. Google’s affirmative defenses of invalidity of the ’104 and ’520 Patents are voluntarily dismissed with prejudice.

14. Google’s affirmative defenses of implied license and waiver, for both copyright and patent infringement, are dismissed with prejudice, pursuant to the Court’s May 31, 2012 order.

-

15. On Google’s Counterclaim for Declaratory Judgment of Non-Infringement of the ’104 Patent (Count One), judgment is entered in favor of Google, pursuant to the jury’s May 23, 2012 verdict of non-infringement. The Court declares that Google has not infringed and does not infringe the ’104 Patent.

9. On Google’s Counterclaim for Declaratory Judgment of Non-Infringement of the
’104 Patent (Count One), judgment is entered for Google.

16. Google’s Counterclaim for Declaratory Judgment of Invalidity of the ’104 Patent (Count Two) is voluntarily dismissed with prejudice....

18. Google’s Counterclaim for Declaratory Judgment of Invalidity of the ’702 Patent (Count Four) is dismissed as moot in light of Oracle’s voluntary dismissal of its infringement claim....

20. Google’s Counterclaim for Declaratory Judgment of Invalidity of the ’520 Patent (Count Six) is voluntarily dismissed with prejudice....

22. Google’s Counterclaim for Declaratory Judgment of Invalidity of the ’447 Patent (Count Eight) is dismissed as moot in light of Oracle’s voluntary dismissal of its infringement claim....

24. Google’s Counterclaim for Declaratory Judgment of Invalidity of the ’476 Patent (Count Ten) is dismissed as moot in light of Oracle’s voluntary dismissal of its infringement claim....

26. Google’s Counterclaim for Declaratory Judgment of Invalidity of the ’205 Patent (Count Twelve) is dismissed as moot in light of Oracle’s voluntary dismissal of its infringement claim....

28. Google’s Counterclaim for Declaratory Judgment of Invalidity of the ’720 Patent
(Count Fourteen) is dismissed as moot in light of Oracle’s voluntary dismissal of its infringement
claim.

17. Google’s Counterclaim for Declaratory Judgment of Non-Infringement of the ’702 Patent (Count Three) is dismissed as moot in light of Oracle’s voluntary dismissal of its infringement claim....

19. On Google’s Counterclaim for Declaratory Judgment of Non-Infringement of the
’520 Patent (Count Five), judgment is entered in favor of Google, pursuant to the jury’s May 23, 2012 verdict of non-infringement. The Court declares that Google has not infringed and does not infringe the ’520 Patent....

21. Google’s Counterclaim for Declaratory Judgment of Non-Infringement of the ’447 Patent (Count Seven) is dismissed as moot in light of Oracle’s voluntary dismissal of its infringement claim....

23. Google’s Counterclaim for Declaratory Judgment of Non-Infringement of the ’476 Patent (Count Nine) is dismissed as moot in light of Oracle’s voluntary dismissal of its infringement claim....

25. Google’s Counterclaim for Declaratory Judgment of Non-Infringement of the ’205 Patent (Count Eleven) is dismissed as moot in light of Oracle’s voluntary dismissal of its infringement claim....

27. Google’s Counterclaim for Declaratory Judgment of Non-Infringement of the ’720 Patent (Count Thirteen) is dismissed as moot in light of Oracle’s voluntary dismissal of its infringement claim.

10. On Google’s Counterclaim for Declaratory Judgment of Non-Infringement of the
’520 Patent (Count Five), judgment is entered for Google.

29. On Google’s Counterclaim for Declaratory Judgment of Non-Infringement of the Asserted Copyrights (Count Fifteen) as to the documentation for the accused 37 Java API packages, judgment is entered in favor of Google, pursuant to the jury’s May 7, 2012 verdict of non-infringement. The Court declares that Google has not infringed and does not infringe
Oracle’s copyrights as to the documentation for the accused 37 Java API packages.

30. On Google’s Counterclaim for Declaratory Judgment of Non-Infringement of the Asserted Copyrights (Count Fifteen) as to the rangeCheck code in TimSort.java and ComparableTimSort.java, judgment is entered in favor of Oracle, pursuant to the jury’s May 7, 2012 verdict of infringement.

31. On Google’s Counterclaim for Declaratory Judgment of Non-Infringement of the Asserted Copyrights (Count Fifteen) as to the English-language comments in CodeSourceTest.java and CollectionCertStoreParametersTest.java, judgment is entered in favor of Google, pursuant to the jury’s May 7, 2012 verdict of non-infringement. The Court declares that Google has not infringed and does not infringe Oracle’s copyrights as to the English-language comments in CodeSourceTest.java and CollectionCertStoreParametersTest.java.

32. On Google’s Counterclaim for Declaratory Judgment of Non-Infringement of the Asserted Copyrights (Count Fifteen) as to the eight decompiled files (seven “Impl.java” files and one “ACL” file), judgment is entered in favor of Oracle, pursuant to the jury’s May 7, 2012 verdict of non-infringement.

33. Google’s Counterclaim for Declaratory Judgment of Non-Infringement of the Asserted Copyrights (Count Fifteen) as to the structure, sequence, and organization of the accused 22 37 Java API packages is dismissed as moot in light of the Court’s dismissal with prejudice of 23 Oracle’s infringement claim.

13. Google’s Counterclaim for Declaratory Judgment of Non-Infringement of the Asserted Copyrights (Count Fifteen) is dismissed as moot, except as follows:

A. On the portion of Google’s Counterclaim for Declaratory Judgment of Non-Infringement of the Asserted Copyrights relating to the documentation for the accused 37 Java API packages, and on the portion relating to the English-language comments in CodeSourceTest.java and CollectionCertStoreParametersTest.java, judgment is entered for Google.

B. On the portion of Google’s Counterclaim for Declaratory Judgment of Non-Infringement of the Asserted Copyrights relating to the rangeCheck code in TimSort.java and ComparableTimSort.java, and on the portion relating to the eight decompiled files, judgment is entered for Oracle.

-

14. In accordance with 17 U.S.C. § 504(c), Oracle is hereby awarded statutory damages in the amount of _________ as to the rangeCheck function, which the Court has found to be innocent (Dkt. No. 1202 at 13-14), and in the amount of _________ as to the eight decompiled files, which were treated at trial as a single unit. (Dkt. No. 1202 at 14).